Trade mark decision

BL Number

O/016/04

Decision date

16 January 2004

Hearing Officer

Mr J MacGillivray

Mark

MAX PRO

Classes

05, 30, 32

Applicant

Maximuscle Limited

Opponent

SHS International Limited

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b) - Opposition partially successful. (Part of Class 5 and whole of Class 30).

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition partially successful. (Part of Class 5 and whole of Class 30).

Points Of Interest

• 1. The opponent appealed to the Appointed Person. In his decision dated 30 July 2004 (BL O/228/04) the Appointed Person allowed the appeal in relation to Class 5 but refused it in relation to Class 30.

Summary

The opponent's opposition was based on their ownership of a registration in Class 5 of the mark MAXIPRO in respect of pharmaceutical products and infants' and invalids' foods. They also claimed use of their mark for some twenty years, and filed details of such use for the years 1999-2002, in relation to a powdered whey concentrate for the dietary management of hypoproteinaemia.

Under Section 5(2)(b) the Hearing Officer decided that the respective marks MAX PRO and MAXIPRO were similar and that some of the applicant's Class 5 goods were identical to those of the opponent's Class 5 registration. The opposition succeeded in respect of such goods; also in respect of the applicant's Class 30 application where similar goods were in issue. Opposition failed in respect of some Class 5 goods and the Class 32 goods.

Opposition failed on the Section 5(3) grounds as the opponent had insufficient reputation to support this ground.

Under Section 5(4)(a) – Passing Off – the Hearing Officer accepted that the opponent had a reputation and goodwill in their mark but only in respect of a very restricted range of goods. Thus in the absence of specific evidence he considered that they were in no better position under this head as compared to Section 5(2)(b). He, therefore, found the opposition to be successful in respect of some goods in Class 5 and in respect of Class 30.

Full decision O/016/04 50Kb